Monday, March 25, 2013

Trade dress protected in combination; not all elements protected

Plaintiff sued defendants for trademark infringement and
related claims, alleging infringement of its “It’s a 10 Miracle Leave-In
Product” by BEG’s use of similar font, colors, and design on its “10–PL+US
Miracle Leave–In Treatment.”The court
described the similarities:

Both bottles are purple with a
magenta cap, and with magenta and white text and accents. The bottles are
roughly the same height, and both use the phrases “Miracle Leave–In” to
describe their product. Both bottles place the '10' approximately
three-quarters of the way up the front of the bottle. The '10's' are nearly the
same size, and they are both oriented horizontally across the respective
labels. The back label of Defendants' product is also similar to the back label
of Plaintiff's product. At the top of Plaintiff's back label, it states that
“It's a 10 does 10 things instantly.”It then numbers and lists those ten
features. At the top of Defendants' back label, it states that “Miracle
Leave-in Treatment is a Salon Inspired formula that instantly” does fourteen
things. It then numbers and lists those features, using the same white text and
purple background as is found on Plaintiff's label.

Plaintiff’s CEO affirmed that she’d received “several
inquiries” from customers about BEG’s product.However, BEG agreed to withdraw the accused product and repackage it,
changing the color, eliminating “miracle,” and emphasizing its brands “SoSilk”
and “BioPlus” with a reconfigured label.The new bottle is white with a pink label, uses “10 PL+US” vertically in
the middle of the bottle; and uses a different font. The back label no longer
contains the word “instantly,” nor does it number and list the product's
features. However, the old label design
was apparently still available in stores because distributors had residual
supplies.Plaintiff sought to enjoin the
new and the old bottles, the new because of the use of the number 10.

The court found likely confusion with respect to the old
trade dress, but not the new.“It’s a 10”
was suggestive as applied to a beauty product; “Miracle Leave–In Treatment” might
not be protectable alone, but was when
used in conjunction with “It's a 10.”The similarity of the marks weighed “decisively” in favor of an
injunction against the old product.The
word marks were “strikingly similar” and their placement on the bottles,
colors, and fonts “would likely make it difficult for consumers to distinguish
between the two products.”Also, intent
favored plaintiff because the very similarity made copying “clear,” so BEG didn’t
fulfill its duty to avoid confusion with a senior mark.

As for irreparable harm, likely confusion itself threatens
irreparable harm.Voluntary cessation
wasn’t enough to avoid an injunction, especially since the product with the old
label was still on sale after BEG promised to stop selling it. And of course
the balance of harms favored plaintiff, given its interest in the mark and BEG’s
voluntary cessation.

The new label was a different story.Similarity weighed strongly against a
preliminary injunction: the bottles were different shapes (now relevant!) and
colors, using different fonts and putting “10” in a different place on the
bottle. BEG’s label prominently displayed its own house marks.There was no evidence that the products were
sold in the same stores or advertised in the same media—not important before,
but important now given the dissimilarity. “Given BEG's willingness to alter
its design, there is no longer any evidence that BEG is intentionally trying to
copy Plaintiff's marks and trade dress.”There was no evidence of confusion over the new label.Only the strength of plaintiff’s mark favored
an injunction, and that wasn’t enough.

Plaintiff argued that, given past confusion, the only way to
protect its interests was to bar BEG from using “Miracle” or “10.”The court disagreed.Plaintiff’s Miracle trademarks don’t “necessarily
preclude competitors from otherwise incorporating the word into their products.”Indeed, other companies already use the word
in hair-care product names; plus, BEG removed Miracle from its new label and
was enjoined from using the old label, so there was no need to grant a broad
injunction against the use of “Miracle.”

Nor did plaintiff show a protectable interest in “10.”BEG identified 111 hair products using 10 in
their names, and “TEN” is registered to a third party.“Given the widespread use of '10' in the
industry, the Court concludes that Plaintiff does not have a protectable legal
interest in '10.'”

The court also denied other requested injunctive relief,
such as an accounting of sales—this was an improper substitute for discovery.

The court’s injunction specified that it was enjoining the specific
combination of elements, not necessarily each element individually:

[T]he enjoined label contains the
following elements: it is purple with a magenta cap, and magenta and white text
and accents; displays the phrase “miracle leave-in”; prominently places the
number '10' approximately three-quarters the way up the bottle; on the back
label it claims that its product “instantly” does fourteen things, and then
those features are numbered and listed.

While it’s unclear how many of the elements BEG could use
without violating the injunction, it is a useful point to make that a trade
dress in a combination of features might well leave competitors free to use
many of those features, as long as they don’t use the others.

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